Professor John Duffy on Legal Team That Wins Landmark Supreme Court 'Forum-Shopping' Case

The Supreme Court today released a decision that will significantly curb so-called "forum-shopping" in patent infringement cases, handing a win to a legal team that includes John Duffy, a University of Virginia School of Law professor.

The Supreme Court ruled 8-0 in TC Heartland v. Kraft Food Brands Group on behalf of Heartland that such cases must be tried either in the state where the defendant company is incorporated or in a district where the defendant company has committed acts of infringement and has an established place of business.

Duffy represented TC Heartland in court at the federal appellate level and at the Supreme Court, where the case was argued March 27.

Heartland's attorneys argued that, under a 1957 precedent of the Supreme Court, patent venue is controlled by a specific federal statute that limits the districts in which a patent infringement suit can be brought.

In a March 11, 2016, argument before the U.S. Court of Appeals for the Federal Circuit, Duffy said the Federal Circuit should follow the approach set forth in the Supreme Court’s 1957 decision. The court rejected Duffy’s argument and reaffirmed its own precedent, which permits venue wherever a federal court would have personal jurisdiction over a defendant company, not just where the company is headquartered or has a regular place of business.

The Supreme Court reversed that interpretation in a 10-page opinion written by Justice Clarence Thomas.

"Today's decision vindicates prior Supreme Court precedent and reinstates the traditional approach to patent venue, which had worked well for nearly a century before the Federal Circuit departed from that approach," Duffy said. "The case also shows the continuing trend of the Supreme Court reasserting its authority over patent cases — a trend I identified 15 years ago in my article on 'The Festo Decision and the Return of the Supreme Court to the Bar of Patents.'"

The case will likely end the predominance of patent infringement cases in the federal court in the Eastern District of Texas. Patent infringement cases are likely to be distributed more evenly over the various federal districts, with more cases being brought in states where companies are incorporated or where they have their principal places of business.

Dell Inc., the American Bankers Association, 56 law and economics professors, and Paul R. Michel, a 1966 alumnus of the Law School and a retired chief judge of the Federal Circuit who presided over numerous influential patent law decisions, were among those who submitted briefs of amici in support of Heartland’s petition.

Duffy has long been influential in important patent cases. In 2007, he was co-counsel for the prevailing petitioner in the Supreme Court case KSR v. Teleflex, the first Supreme Court case in decades on the standard of patentability. In 2008, the U.S. Court of Appeals for the Federal Circuit invited him to present oral argument in an important en banc case, In re Bilski, concerning whether novel business methods could be patented.

He is the Samuel H. McCoy II Professor of Law, and the Elizabeth D. and Richard A. Merrill Professor of Law at UVA.